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Greetings!

Earlier this month I was fortunate to visit Austin, Texas for the first time to speak to other attorneys about trademark and brand strategies at a Cyberspace Law conference.

Austin is a great town for a variety of reasons: nice people, lots of activities, and great food, to name a few. I particularly enjoyed the diversity and depth of the local business community. Everywhere I turned I saw creative local businesses with great brand names: Roaring Fork, The Dizzy Rooster, The Blind Pig Pub, cornucopia, Coat & Tie, Home Slice Pizza, and many more. Read more about my trip to “Keep Austin Weird” here.

Did You Know?

Sarah and Bristol Palin have no problem making news. But recent news about their trademark applications – and their initial rejection by the USPTO – was probably not the type of coverage they prefer.

Many celebrities and entertainers protect their names and they should. Their name is their ticket to financial success and has great value.

The media has picked up and written hundreds of short and long articles that reference the trademark applications. A majority of the stories have some or all of the facts wrong. For example, people often have their attorneys sign the application; the applications have not been flat out rejected, they have 6 months to respond to the refusals; and the registrations would only cover the services listed therein, not all uses of the names and certainly not use of their names in the news.

Trademark applicants who receive initial objections automatically have six months to respond and to address or correct the issues. It looks like the Palin’s attorney may not have handled many trademarks before – the problems in the applications are fairly easily avoided or corrected.

Trademark Tip:
The Many Benefits of Federal Trademark Registration

A trademark registration issued by the U.S. Patent and Trademark Office on the principal register of trademarks has many benefits, including:

– use of the circle-R ® symbol which helps ward off potential infringers and shows off the significance of the trademark
– appearing in the USPTO database when others search trademarks, which helps avoid potential infringements
– creation of a tangible asset that can be licensed, transferred, and/or assigned a monetary value
– ability to seek triple damages and attorney’s fees in court
– right to sue infringers in Federal District Court
– nationwide priority in all 50 states as of the application filing date
– when contacting infringers or domain name cybersquatters, a powerful tool to attach to a letter and to attempt to resolve situation quickly and without litigation expenses and risks
– ability to record the trademark with U.S. Customs and Border Patrol, who could help exclude infringing imports

Overall, trademark registration enhances the value and protection of your brand, and it acts as a form of insurance that reduces the risk of getting involved in expensive disputes as either plaintiff or defendant.

Trademarks in the News:

Super Bowl commercials show the power of brands

Now that this year’s Super Bowl® is over, we can focus on the best commercials from the game!  The most popular and buzz-worthy ads generally involved celebrity appearances or cross overs that show the power of brands and the trademarks that protect them. Here are some examples:

My favorite commercial was for the Volkswagen Passat, featuring a child dressed as Darth Vader. The Star Wars franchise is still  strong many years after its creation, and I am sure that LucasFilm was paid nicely for the use of Darth (Droid® is also a LucasFilm trademark). Darth Vader, like all Star Wars characters, is well protected:

The voice of Darth Vader is a registered trademark. Description of Mark: The mark consists of the sound of rhythmic mechanical human breathing created by breathing through a scuba tank regulator. Goods: Costume masks; voice altering toys; toy computers; handheld playthings, namely, toy action figures and hand held units for playing electronic games; dashboard driver figurines, namely, bobble head dolls and modeled plastic toy figurines; Halloween and masquerade costumes incorporating masks
Note – the sound of a Light Saber® is also registered

– Costumes, namely, Halloween costumes, masquerade costumes, and costumes for use in role-playing games; costume helmets, namely, Halloween costume helmets, masquerade costume helmets and costume helmets for use in role-playing games; Toy action figures and statuettes; collectible toy action figures; collectible toy helmets


– Costumes, namely, Halloween costumes, masquerade costumes, and costumes for use in role-playing games; costume helmets, namely, Halloween costume helmets, masquerade costume helmets and costume helmets for use in role-playing games; Toy action figures and statuettes; collectible toy action figures; collectible toy helmets


DARTH VADER – toy figures

Kenny G starred in a Audi commercial. Kenny G might be poked fun at (and to his credit, embrace it), but he is no dope – he owns several registered trademarks including:
KENNY G – musical entertainment services

Eminem the musician/rapper starred in two different commercials. His brand is also protected by several trademark registrations:

EMINEM – entertainment services, namely, the presentation of live musical performances

GoDaddy.com again featured a racy ad, this time starring Joan Rivers. Her brand is protected too:
JOAN RIVERS – jewelry, watches

To view these commercials and others, see Spike.com. What was your favorite commercial?

Firm News

Our teleconference series began last month and is off to a great start. For a video of last month’s presentation, Ten Essential Trademark Tips, see erikpelton.tv.

To stay updated about future teleconference topics, follow us on facebook at www.facebook.com/tm4smallbiz.

Suggestions

If there are any topics or issues you would like to see covered here, let us know!

This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.

© 2011 Erik M. Pelton & Associates, PLLC.
ALL RIGHTS RESERVED.

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